Ex Parte Sosalla

Patent Trials and Appeals Board

Sep 18, 2014

12343079 - (D) (P.T.A.B. Sep. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAULA MARY SOSALLA
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Appeal 2012-004360
Application 12/343,079
Technology Center 3700
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Before JOHN C. KERINS, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Paula Mary Sosalla (Appellant) filed a request for rehearing under
37 C.F.R. § 41.52 (hereinafter “Request”), dated August 26, 2014, of our
decision mailed June 27, 2014 (hereinafter “Decision”). In the Decision, we
affirmed the Examiner’s rejection of claims 1–4, 11, 14–18, and 26–36
under 35 U.S.C. § 103(a).
OPINION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) (quoting Manual of Patent Examining Procedure
Appeal 2012-004360
Application 12/343,079

2
(MPEP) § 1214.03 (8th ed., Rev. 9, Aug. 2012)). It may not rehash
arguments originally made in the Brief, neither is it an opportunity to merely
express disagreement with a decision. The proper course for an Appellant
dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided. See
35 U.S.C. §§ 141, 145. Appellant’s argument regarding our determination
that “Appellant has not explained why Nielsen’s voice message is not related
to potty training” (Request 3, citing Decision 4 (citation omitted)) does not
identify any matter overlooked or misapprehended by the Panel, and thus, is
not appropriate for this forum.
Appellant contends that we
misapprehended the Appellant’s argument in reasoning that
“Appellant’s argument is unconvincing because it is not
responsive to the rejection as articulated by the Examiner in that
the rejection relies upon Nielsen to teach a plurality of training
pants and an audio device with a prerecorded verbal message
that is related to potty training, while relying upon Hermanson
for a packaging system having a container having an audio
device. Ans. 5. One cannot show nonobviousness by attacking
references individually where the rejections are based on
combinations of references.
Request 2–3 (citing Decision 4). In support of this contention, Appellant
asserts that page 6 of the Appeal Brief addresses the rejection of Claim 1
based on a combination of Nielsen and Hermanson. Id. at 3.
We did not misapprehend this point. The above quoted portion of the
Decision is directed to Appellant’s arguments set forth on page 5 of the Brief
and does not pertain to Appellant’s arguments on page 6 of the Brief.
Decision 4.
Appeal 2012-004360
Application 12/343,079

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Appellant contends that “[t]he Board’s facts and rationale for the
affirmance (substituting the actual voice message of Nielson for
Hermanson’s sounds in Hermanson’s audio device) changed the thrust of the
Examiner's rejection (substituting Neilson’s audio device itself for
Hermanson’s audio device).” Request 2. Appellant argues that “Appellant
is therefore entitled to reopen prosecution or to request a rehearing under
37 C.F.R. § 41.50(b).” Id.
We believe the decision to affirm the Examiner’s rejections is fairly
based on findings made by the Examiner; however, the analysis in the
Decision reformats various positions taken by the Examiner into what we
believe more understandably portrays the basis for the conclusion that the
subject matter of the claims would have been obvious. Appellant’s Request
intimates that Appellant may have other and different arguments or evidence
to address the rationale set forth in the Decision. As such, out of an
abundance of caution, and to afford Appellant an opportunity to respond, we
shall denominate the affirmances of the rejections of claims 1–4, 11, 14–18,
and 26–36 as new grounds of rejection under 37 C.F.R. § 41.50(b), with the
specific grounds being as set forth in the Decision.
Any and all other relief sought in the Request is denied.

DENIED-IN-PART; 37 C.F.R. § 41.50(b)

JRG/llw